Monday, 27 October 2014

Back in October 2013 the Colombian company ‘Two of You’ applied for the registration of the mark ‘Toy Two of You’ in class 3 of the Nice Classification (i.e. nail varnish/polish, nail art stickers, perfumes,among others). Once the application was published and no opposition was filled, the Superintendence (SIC) started to examine the registrability of the sign.

At such stage, SIC encountered the registered mark ‘Toy Story’ in class 3 by Disney Enterprise. Due to this finding, the office believed that the signs were similar and thus, would cause confusion among the public. Therefore, the application was rejected on relative grounds of refusal Art 136 Andean Community (CAN) Decision 486.

Two of you appealed to the decision arguing that the marks were not similar since they were orthographic differentiated, especially visually. While they shared the word 'Toy' there were other element that differentiated them. The appealed succeed and the mark ‘Toy Two of you’ have been successfully registered (Dossier No 13246132).

The newspaper La Republica published the point of view of IP lawyer Guillermo Navarro, who said that the first instance decision "was an exaggerated interpretation, and out of context”. And thus agreeing with the appeal outcome. Moreover, he asserts that the signs contained enough differences and that this was showed by Disney not filing opposition. Another IP lawyer opinion was also published, that of Miss Julia Carmen Monroy, at Wolf & Mendez who also agreed with the appeal conclusion. She said that "Toy Story is a well-positioned brand in the market, and … consumers do very well differentiate the two products.”

Tuesday, 21 October 2014

On July this year the American well-known coffee brand Starbucks launched its first store in Colombia. But, before launching its store it applied for the registration of some of its trade marks at the Colombian Superintendency of Industry and Commerce (SIC). While the nominative and graphic marks for Starbucks did not encounter any issue, the same cannot be said for its nominative mark ‘Shared Planet’ applied to be registered in classes 30, 36 and 41 respectively.

Despite the fact that there was not opposition for the mark to be registered SIC proceeded to examine the sign in accordance with Art 150 Decision 486 of the Andean Community (i.e. “At the expiration of the period stipulated in article 148, or if no objections have been filed, the competent national office shall proceed to conduct the examination of registrability.”). By doing so, SIC found that the mark was similar to a previous registered one i.e. ‘Sharé’ (Dossier No 03 085665) registered back in September 2003 to Mr Martinez in class 30 Nice Classification (coffee, tea, vinegar, condiment sauces, etc) and therefore, rejected the said application for just that class. SIC granted to Starbucks the nominative mark ‘Shared Planet’ in classes 36 and 41 after the company appealed to the decision.

In the opinion of Ms Calderon, a lawyer from Prietocarrizosa, "this is a very complex case as there are reasons to believe that the signs have substantial differences that would not allow a consumer to get confused between them, but on the other side it is clear that the main elements of both signs are quite similar, hence, understand the position of the SIC to deny registration ".

It is noticeable from the dossier that the expiration date is/was 30 April 2014 and thus, up to today there has not been renewal of the said mark. However, SIC grants a grace period of 6 months and thus, Mr Martinez do have until 30 October to renew its mark – otherwise, after this day, it would be free to grab.

The newspaper 'La Republica' publishes the view of Mr, Jesus Mendez, an IP lawyer from the firm Wolf & Méndez. He appears to disagree with the ‘grace period’ stating that "In strict legal sense, the mark has expired and in this case [SIC] is extending the period of protection.”

Nevertheless one might remember that according to Art 153 Decision 486 of the Andean Community, the owner of a registered trade mark or any party with a legitimate right “shall be given a grace period of six months following the date of expiration of the registration in which to apply for renewal.” Moreover, the “registered trade mark shall retain its full validity over that period.” That said, and using the same statement as Mr Mendez, ‘in strict legal sense’ Mr Martinez still have a legal base for its mark to be protected and for SIC rejecting the said application from Starbucks.

Monday, 20 October 2014

The Brazilian Instituto Nacional da Propiedade Industrial (INPI) is now facilitating access to online search system of trade marks, patents, industrial designs, and computer programs. It all started last Tuesday, October 14.

There is a direct link and thus access to the database without going through login/password page. However, if you would like to have access to a wider content and thus, production of documents, you should register. This latter appears to be a straightforward and easy process i.e. just filing out certain details – as far as I am aware nothing to do with ‘payment/fee’ details as the Venezuelan IP office requires (see previous post here).

Registration, while not crucial, comes divided into three sectors: 1.- Client (natural or legal person domiciled in the country); 2.- Lawyer or Attorney without special qualification (representing a client in the requested services); and 3.- Industrial Property Agent.

This new addition complements previous online services such as: ‘e-marcas, electronic view of petitions, and ‘push’.

At the end of September Natalia Franco Onofre posted the good newson IP Tango that trade mark registration in Colombia was now taking place more swiftly, with registration in six months becoming a reality. It now seems that, following implementation by the Colombia Trade Mark Office of Administrative Resolution 48348, the average time for registration has dropped to four months. This is clearly good news for trade mark applicants.

Source: "COLOMBIA: Trademark Registration Now Takes As Little As Four Months" by Jorge Chávarro (Cavelier Abogados, Bogota), published in the INTA Bulletin, October 15, 2014, Vol. 69, No. 19.

Monday, 13 October 2014

IP Tango learns that, following the adoption of a comprehensive Criminal Code, Ecuador has decriminalised both counterfeiting and the infringement of intellectual property rights. This new law is in conflict with the TRIPS Agreement, Article 61 of which states:

Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.

There are however a number of measures which, if not as directly applicable and effective as the criminal law, are still available to combat the sale of counterfeit goods. These measures include administrative actions, such as border measures; civil actions; and actions based on the Ecuadorian Constitution/

The government is also said to have announced that it is reviewing the position, and proposals to amend the Criminal Code and restore criminal penalties for IP are currently under consideration by the National Assembly.

This blogger is somewhat alarmed at the cavalier manner in which such an economically important measure as the provision of criminal remedies for certain IP infringements has been treated: perhaps the Ecuador government is unaware of the damage caused to legitimate business interests and ultimately to its own tax revenue by inadequate IP enforcement measures.

Wednesday, 8 October 2014

The Colombian Superintendence of Industry and Commerce (SIC) received an application to register the word mark ‘Lavomatic’ in Class 9 of the Nice Classification i.e. digital recording media, cash registers, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, and the like.

Once the application was published, UNILEVER opposed to the registration on relatives grounds: Art 136 (a) of CAN Decision 486 (the Andean Common Intellectual Property Regime) i.e. identical marks for identical or similar goods/services; and (h) “consist of a total or partial reproduction, imitation, translation, transliteration, or transcription of a well-known sign belonging to a third party without regard to the type of product or service to which it shall be applied, the use of which would lead to a likelihood of confusion or mistaken association with that party,; taking unfair advantage of the prestige of the sign; or weakening its distinctive force or its use for commercial or advertising purposes.”
UNILEVER is the owner of the word mark ‘Lavomatic’ in Class 3 i.e. bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. Consequently, while the word marks were identical, the goods were neither identical nor similar (as required by Art 136(a) Decision 486). SIC further stated that when comparing the products no direct or indirect relationship would generate the public/ consumer to be confused – “consumers will be in the ability to identify and individualize one from the other and recognize that [the products] belong to different entrepreneurs."

However, UNILEVER claimed that its mark was ‘well-known’ and submitted evidence such as: investment of d $2,000 million in the period between 2011 and 2013 on advertising and promotional activities; revenues of $ 11,876 million in 2011, $ 29,000 million in 2012. It requested its mark to be declared ‘notorious’. After examining the evidence, SIC ruled that ‘Lavomatic’ by Unilever is a well-known trade mark and thus, the opposition action was successful under Art 136(h) Decision 486.

Tuesday, 7 October 2014

The Venezuelan Intellectual Property Office (SAPI) informs in its webpage the ‘good’ news that it has officially computerized the trade mark search for phonetic and graphic signs. I was excited to read the title and eager to start browsing around as I always do with my students when we cover the topic of trade marks, however…well it is not that simple (time or money wise).

According to the information provided, the computer aspect of it refers to the following: service request and deliver of the information is done via e-mail -- that’s it! Yet, SAPI’s Director said that the “new system via internet searches, is a significant advance in the quality of service that we provided to users, and is due to the instruction of [Venezuelan] President Nicolas Maduro: Efficiency or Nothing."
When looking at the webpage and the process this is also noticed: “This search allows you to request a certain number of searches ...depending on the amount deposited in the bank”. The deposit ought to be done 24 hours before the search is allowed. After you do so, you will be able to use the search ‘computer’ service by submitting all details regarding the deposit (about 6 questions are asked here about the money) and you will then submit the phonetic and/or graphic trade mark you would like to search for. Finally, you will receive an email within 48 hours after application to give you the results of the search.

Money, money, money.
The cost of a search for phonetic marks is 169.00 Bs for each class you want to search. The graphic marks cost of search is 113.00 Bs per class.
How much is this, actually? The new daily minimum wage in Venezuela is 141.71 Bs…so, you do the math…no economical at all. What this really means is that you will have to skip a couple of your daily bread if you want to use this ‘quality service’ provided by the institution.

It is wrong to believe that trade marks are only for wealthy business/people. Moreover, it is recommended to register a trade mark from day one – so, before you get any return or gain from your business. The price instead of motivating small business to register, it is actually deterring them from doing so. And regarding the President’s slogan ‘efficiency or nothing’, well…it is open to debate.

Monday, 6 October 2014

The Colombian Superintendence of Industry and Commerce (SIC) as the authority for Industrial Property used to take approx. 63 months (more than 5 years) to grant a patent. Due to this delay, the office has been working towards speeding the request for patents and today, the average has been reduced to 24 months (2 years). It is said to be the third quickest office to grant patents after China and South Korea.

Going further, the Government issued Decree 1873 of September 29, 2014, in order to compensate in the event of a possible unjustified delay in the patent application process. However, the said compensation “does not apply to inventions on pharmaceutical products”.

Compensation is fixed as follows: for each day of ‘unreasonable delay’ in processing the patent, an additional day will be granted, counted from the last day of validity of the patent. That is, the compensation is 1 day of delay for 1 day of additional protection.

According to the Minister of Commerce, Industry and Tourism, an ‘unreasonable delay’ in the granting of the patent is existent when the decision is issued in a longer time than 5 years from the filing of the application or, 3 years from when the examination of the application was requested. It is also noted that the “issuing of the decree is not only a commitment of the Government to be more efficient and give a boost to innovation, but also corresponds to commitments with countries that have signed trade agreements with Colombia.”

SIC’s inspector Mr Robledo said the “Decree constitutes an additional guarantee of protection to inventors, both domestic and foreign."

The Court of Appeal of Rio Grande do Sul (TJ-RS) has decided on Sept 24th that the multinational Monsanto has the right to charge royalties regarding the transgenic soy-bean from Brazilian farmers.

The decision, rendered in a split decision by the 3 member panel from the 5th Chamber of the Court of Appeal, reversed the first instance decision granted in 2012 that had considered inadequate any payment or indemnification based on the use by farmers of the soy-bean seed "Roundup Ready (RR)".
The opinion of the Reporter Judge is that the application of the Brazilian Plant Variety Law (Law 9456/1997), as demanded by the claimants, is not possible. Thus, being the Brazilian Patent Law (Law 9279/1996) applicable, Monsanto has the right to claim royalties regarding the reproduction of patented seeds through planting and harvesting while the patent (PI 110008-2) is valid.

In 2009, some rural workers' unions from southern regions in Brazil filed a class action arguing that Monsanto’s charge for royalties is effectively an unjust tax based on abuse of IP rights. Furthermore, that Art. 10 of the Plant Variety Law allows them to multiply seeds, for donation or exchange in dealings. In 2012, the 15th Civil Court of Rio Grande do Sul had accepted the claimant’s claims and also ordered Monsanto to return the royalties paid from the 2003/2004 harvest.

The Court of Appeal’s decision is not yet final and an appeal to the superior courts is still possible.

MONSANTO’S CHANGE OF LUCK
Monsanto’s luck in Brazilian courts has not been the best in recent years.
As IP TANGO have already mentioned before, in 2013 the Brazilian Superior Court of Justice (STJ) denied Monsanto’s claims to extend the term of the patent for genetically modified soy-beans, confirming that the patent expired on August 31, 2010.

Also in 2013, the Judge Alex Nunes de Figueiredo, from the Specialized Court in Class Actions and Collective Actions of Cuiabá, has issued a decision preventing Monsanto from charging royalties based on its new Intacta-RR2-PRO product in the state of Mato Grosso. This decision was based on the Art. 10 of the Plant Variety Law and Consumer Protection Laws. After losing this case, Monsanto suspended temporarily the collection of royalties on both its Roundup Read (RR) soy-bean seeds and the Bollgard 1 cotton seed

WHAT’S MORE?
It is hard to determine now if this decision shall impact the decision on an appeal against the lawsuit in the State of Mato Grosso. However, this decision might discourage other producers from pursuing similar claims. The first instance decisions in Rio Grande do Sul and Mato Grosso also seems to have encouraged neighbour countries such as Paraguay to complain about Monsanto’s charging practices (for more see Filomeno, F. A. (2014) Monsanto and intellectual property in South America) and this decision might alter this scenario.

Brazil is currently the largest soy-bean producers in the world. Brazil is also the second largest producer of transgenic soy-bean, just after the U.S. Therefore, we can expect this discussion to continue for a while.

Post written by Roberto Carapeto (Brazilian attorney).
The full sentence can be accessed here (in Portuguese); for short details brought by the court, here (in Portuguese)